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Institute Of Cost Accountants Of India v. Registrar Of Trade Marks And Another
Factual and Procedural Background
The petitioner, a body corporate constituted under The Institute of Cost and Works Accountants Act, 1959, applied on 1-10-2010 for registration of the trade mark "CMA" in class 41. Despite several enquiries, the petitioner did not receive any response from the respondents, who are the Registrars of Trade Marks at Mumbai and Kolkata. On 13-3-2012, the petitioner discovered on the respondents' website a letter dated 19-9-2011 from respondent No. 1 to its advocate stating objections to the application and requesting a response or hearing application within one month, warning that failure to respond would result in abandonment of the application under section 132 of the Trade Marks Act, 1999. The petitioner was not directly communicated this letter; it was only posted on the website. Subsequently, the petitioner applied for a hearing within one month of noticing the letter on the website. This writ petition seeks a mandamus directing respondent No. 1 to fix a hearing date for the application.
Legal Issues Presented
- Whether placing an objection letter on the respondents' website constitutes valid written communication to the applicant under Rule 38(4) of the Trade Marks Rules, 2002.
- Whether the petitioner's application for registration of the trade mark "CMA" can be deemed abandoned for lack of prosecution when the petitioner was not directly communicated the objections.
- Whether the petitioner is entitled to a hearing on the application for registration of the trade mark.
Arguments of the Parties
Petitioner's Arguments
- The petitioner had not received any direct communication of the objection letter dated 19-9-2011; it was only posted on the respondents' website.
- The petitioner was unaware of the objections until it noticed the letter on the website on 13-3-2012.
- Upon noticing the letter, the petitioner promptly applied for a hearing within one month as required by Rule 38(5).
- The petitioner argued that posting the letter on the website does not satisfy the requirement of written communication under Rule 38(4) and that it was not legally bound to monitor the respondents' website regularly.
Respondents' Arguments
- This information was not available in the provided opinion.
Table of Precedents Cited
No precedents were cited in the provided opinion.
Court's Reasoning and Analysis
The Court analyzed Rule 38(4) and (5) of the Trade Marks Rules, 2002, which require the Registrar to communicate any objection or proposal in writing to the applicant and provide a one-month period for response or hearing application. The Court held that merely placing the objection letter on the respondents' website does not fulfill the requirement of written communication under Rule 38(4). The Court emphasized that there was no indication that the petitioner was legally obligated to check the website regularly or that any rule imposed such a duty. Therefore, the petitioner could not be imputed with knowledge of the objection letter dated 19-9-2011 until it actually noticed it on 13-3-2012. Since the petitioner applied for a hearing within one month of such notice, the application could not be deemed abandoned for lack of prosecution. The Court thus found that the petitioner was entitled to have its hearing date fixed and that the application was still pending.
Holding and Implications
DISPOSED OF.
The Court declared that the petitioner's application for registration of its mark under class 41 has not been abandoned. The Rule was made absolute directing the respondent to fix a hearing date as prayed for by the petitioner. No order as to costs was made. This decision directly benefits the petitioner by ensuring its application remains active and that procedural fairness is upheld in communication of objections. No new precedent beyond the facts of communication under Rule 38(4) was established.
S.J Vazifdar, J.:— Rule. Rule is made returnable forthwith and the writ petition is heard finally.
2. The petitioner is a body corporate constituted under the provisions of The Institute of Cost and Works Accountants Act, 1959. Respondent Nos. 1 and 2 are the Registrars of Trade Marks at Mumbai and Kolkata respectively.
3. The petitioner seeks a writ of mandamus directing respondent No. 1 to fix a date of hearing in respect of its application for registration of a trade mark “CMA” in class 41.
4. On 1-10-2010, the petitioner applied for registration of the said mark for goods and services. The petitioner by a letter dated 30-3-2011, inter alia stated that it had not received any response from the respondents in respect of its application for registration despite several enquiries having been made from time to time and that as a result thereof, it was unable to provide training and award degrees/certificates on the “newest branches of management and accountancy”.
5. On 13-3-2012, the petitioner noticed on the respondents' website a letter/examination report dated 19-9-2011 from respondent No. 1 to its advocate in Kolkata stating that its application had been examined under the Trade Marks Act, 1999 and Trade Mark Rules, 2002 and that the mark was open to objection for the reasons mentioned therein. For the purpose of this writ petition, the objections are not relevant. The petitioner was requested to submit its response within one month from the date of receipt of the said letter/examination report or to apply for a hearing. It was further stated that if no reply was received or a request for a hearing was not applied for, the application would be treated as having been abandoned for lack of prosecution under section 132 of the said Act.
6. Admittedly, the letter/examination report dated 19-9-2011 was not forwarded to the petitioner or its advocates. It was merely placed on the respondents'website.—
7. The petitioner's advocate by a letter dated, 28-3-2012 stated the above facts. It was inadvertently stated that he had logged into the respondents' website on 28-3-2012, whereas he had in fact done so on 13-3-2012. The same however is of no consequence. The petitioner's advocate requested the respondents to treat the date of downloading from the website as. the date of the petitioner's knowledge of the order contained in the said letter/examination report dated 19-9-2011; exercised the option for furnishing the objections and applied for a hearing.
8. Rule 38 of the Trade Marks Rules, 2002 reads as under:—
“38. Expedited examination, objection to acceptance, hearing.—
(4) If on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant.
(5) If within one month from the date of communication referred to in sub-rule (4), the applicants fails to comply with any such proposal or fails to submit his comments regarding any objection or proposal to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.”
9. The respondent was bound to communicate any objection or proposal in writing to the applicant. The respondent admittedly did not do so. Placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis. Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posted on the respondents' website. Rule 38(4) by itself does not require an applicant for registration to inspect the respondents' website. The petitioner therefore cannot be imputed with the knowledge of the said letter dated 19-9-2011. The mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by Rule 38(4).
10. The letter dated 19-9-2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website viz. 13-3-2012. Within one month thereof, the petitioner's advocate by the said letter dated 30-3-2012 applied for a hearing, which he has been denied thus far. The petitioner's application for registration cannot therefore, be deemed to have been abandoned.
11. In the circumstances, the writ petition is disposed of by the following order:—
i). It is declared that the petitioner's application for registration of its mark under class 41 has not been abandoned.
ii). Rule is made absolute in terms of prayer (a).
No order as to costs.
Rule made absolute.
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